State Farm Mutual Automobile Insurance Company
v.
Richard Pierce
[Indexed as: State Farm Mutual v. Richard Pierce]
[Indexed as: STATEFARMJOBS.COM et al.]
National Arbitration Forum
Domain Name Dispute Administrative Decision
Forum File No.: FA0005000094808
Commenced: 11 May 2000
Judgment: 6 June 2000
Presiding Panelist: Bruce E. Meyerson
Domain name - Domain name dispute resolution policy - Trademark - Service mark - Identical - Confusingly similar - Legitimate Interest - Bad faith registration - Bad faith use.
Complainant is a registrant of the mark, STATE FARM and has used said mark in relation to insurance and financial services since 1930. Complainant also registered the domain name STATEFARM.COM in 1996. Respondent is an individual who registered the domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM in 1999. Although Respondent did not appear at the hearing the Panel held it did not suffer any prejudice with respect to procedural fairness.
Held, Names Transferred to Complainant
It was held that the domain names registered by Respondent are confusingly similar to the registered marks of Complainant.
Complainant's mark is well known throughout the world and the mark STATE FARM has been registered in association with numerous products and services offered by Complainant. Respondent would have been aware of Complainant's interest in the domain names and has failed to demonstrate any legitimate interest in the mark.
Respondent primarily registered the domain names for the purpose of selling then to Complainant. Respondent has also registered the names to divert traffic from Complainant's website, to its own website, where Respodent is offering similar goods and services. Respondent also registered the names to disrupt the business of Complainant. This was held to be bad faith registration.
Respondent's intent to sell the domain names, its use of the
domain names to divert traffic from Complainant's website for its own commercial
gain and its intent to disturb Complainant's business was held to be bad
faith use.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Decision referred to
--
Meyerson, Panelist:-
The above-entitled matter came on for an administrative hearing on June 6, 2000, before the undersigned on the Complaint of State Farm Mutual Automobile Insurance Company, hereafter Complainant," against Richard Pierce, hereafter Respondent." Janice K. Forrest, Assistant Counsel, State Farm Automobile Insurance Company, appeared on behalf of Complainant. Upon the written submitted record, the following decision is made:
PROCEDURAL FINDINGS
Domain Names: STATEFARMJOBS.COM; STATEFARMCAREERS.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Richard Pierce
Dates of Domain Name Registration: July 21, 1999
Date Complaint Filed: May 11, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)(1) and Rule 4(c), ICANNs Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") : May 11, 2000
Due date for a Response: May 31, 2000
Respondent did not file a response as required by Rule 5(a).
After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on May 11, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Domain Name Registrar Network Solutions, Inc. ("Network Solutions"), the Internet Corporation for Assigned Names and Numbers ("ICANN"), and the Respondent that the administrative proceeding had commenced. Respondent did not file a response as required by Rule 5(a).
On July 21, 1999, Respondent registered the domain names STATEFARMJOBS.COM
and STATEFARMCAREERS.COM with Network
Solutions the entity that is the registrar of domain names. On
May 13, 2000
Network Solutions verified that Respondent is the registrant for the
domain names
STATEFARMCAREERS.COM and STATEFARMJOBS.COM and that further by registering
these domain names with Network Solutions, Respondent agreed to resolve
any dispute regarding its domain names through the Rules which incorporate
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
FINDINGS OF FACT
The undersigned certifies that he has acted independently and has no
known conflict of interest to serve as the Arbitrator in this proceeding.
Having been duly selected, and being impartial, the undersigned makes the
following findings and conclusions.
1. Complainant first began using the STATE FARM trademark in 1930.
2. Complainant registered STATE FARM with the Patent and Trademark Office on June 11, 1996
3. The following marks also have been registered with the Patent and Trademark Office: State Farm Insurance Companies; State Farm Insurance; State Farm Benefit Management Account; State Farm Bayou Classic logo; and State Farm Bayou Classic.
4. Complaint has registered the domain name, statefarm.com.
5. Respondent registered the domain names STATEFARMJOBS.COM and
STATEFARMCAREERS.COM on July 21, 1999.
6. The public associates the phrase "State Farm" with the owner of the service mark "State Farm."
7. Respondent's two domain names are confusingly similar to Complainant's service mark.
8. Evidence produced by the Complainant demonstrates that Respondent intentionally is seeking to divert business from Complainant for the sale of similar goods or services through electronic commerce.
9. Respondent has shown no legitimate interest to the use of any domain name including the service mark "state farm."
CONCLUSIONS
The Respondent has registered and used the domain names STATEFARMJOBS.COM
and STATEFARMCAREERS.COM. in bad faith as follows:
1. Circumstances indicate that Respondent has acquired the domain names
STATEFARMJOBS.COM and STATEFARMCAREERS.COM primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration to
the Complainant who is the owner of the trademark or service mark site
contrary to Policy, Paragraph 4(b)(i).
2. The Respondent has violated Policy 4(b)(iii) because Respondent
wrongfully registered domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM
primarily for the purpose of disrupting the business of Complainant.
3. Respondent, without any established legitimate basis for doing so, used the domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM to attract, for commercial gain, internet users to Respondents web site or other on-line location, and Respondent intentionally created a likelihood of confusion with the Complainants mark as being a source, sponsor, affiliate, or endorser of Respondents web site or location or of a product or service on Respondents web site in violation of Policy 4(b)(iv).
DECISION
Based upon the above findings and conclusions, and pursuant to Rule
15 it is decided as follows:
The undersigned directs that the domain names STATEFARMJOBS.COM and
STATEFARMCAREERS.COM registered by Respondent Richard Pierce be transferred
to Complainant State Farm Mutual Automobile Insurance Company.
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